Apple looks to end Motorola patent attack in Germany with U.S. suit

Apple stayed on the legal offensive Friday, filing a new lawsuit in a U.S. court that claims Motorola Mobility's recent patent barrage of patent claims in Germany is in breach of a licensing agreement between the RAZR maker and Qualcomm.

The complaint, lodged in the Southern District Court of California, asserts that Apple buys and uses Qualcomm wireless baseband processor in its iPhone 4S product and should therefore be a third-party beneficiary to Motorola's license agreement with the chip maker, reports Reuters.

Apple's suit also claims that the patent rights Motorola is exerting in Germany are exhausted in both Europe and the U.S., thus any current or future litigation regarding said patent would be in violation of the patent's original contract.

The patent in question relates to certain how devices connect to UMTS an GPRS networks, a piece of Motorola technology that was licensed by Qualcomm to build baseband chips like the MDM6610 chip found in the CDMA version of the iPhone 4S. In December, a German court handed down an injunction against the iPhone and 3G-capable iPads, saying that the devices infringed on Motorola-owned European Patent 1010336.

In today's filing it is contested that when Qualcomm paid Motorola to use the patent, the company also bought the rights for its customers, including Apple.

From the complaint:

Quote:

This is a lawsuit asserting claims for breach of contract, declaratory, and injunctive relief related to Motorola’s European Patent No 1 010 336 (“the ‘336 patent”) and the equivalent
U.S. Patent No. 6,359,898 (“the ‘898 patent”). Motorola has sued Apple in Germany, claiming infringement of the ‘336 patent based on Apple’s use of Qualcomm components in Apple’s 26
iPhone 4S product. Motorola’s German lawsuit is in direct breach of a Patent Licensing Agreement between Motorola and Qualcomm. As a Qualcomm customer, Apple is a third-party
beneficiary of that contract. Moreover, under this same contract, Motorola’s rights under the ‘336 and the ‘898 patents are exhausted.

In total, today's filing seeks judgment on the following five outlined counts:

Breach of contract to which Apple is a third party beneficiary.
Declaratory judgment that Apple is authorized to use Qualcomm components under a covenant not to sue.
Declaratory judgment that Motorola's patent rights are exhausted.
Permanent equitable injunction.
Permanent anti-suit injunction

With the suit, Apple is looking to end the prosecution enforcement of Motorola's German claims, a permanent injunction of further lawsuits regarding the patent, damages for breach of contract and compensation for legal fees incurred during the hearing process.

Motorola has lodged numerous patent claims against Apple in Germany over a variety of patents, most recently losing a suit in Mannheim over certain 3G/UMTS technology. The telecom has dealt blows to the iPhone makers, however, and is expected to enforce an injunction in the the country related to iCloud's push services.

The U.S. District Court case is Apple Inc. and Apple Sales International v. Motorola Mobility Inc., 12-cv-355.

Wait for the people to enter the thread and whine about "Oh, there's too many lawsuits! I'm tired of them!". Lawsuits are a common thing for a huge company like Apple, get used to them. Like I just said in the other thread, I'm looking forward to many more.

Apple should also join forces with all sorts of Patent Troll companies and take down the no talent companies who infringe upon Apple's IP. At least Apple is not pathetic and desperate, trying to sue using FRAND patents, like some other asshat companies are attempting to do.

This suit will benefit any manufacturer that uses the Qualcomm chip in question. I'm surprised that MicroSoft or Nokia didn't join the suit along with many of the Android phone manufacturers.

All-in-all, Qualcomm licenses a number of patents in order to produce their products, some relating to what the chip does, such as the Moto patent that suit centers around. Moto gets their 2.25% of the Qualcomm chip value, or about 2-3 cents, and not the $15 they were wanting to charge Apple.

Apple's message with all these suits is "Don't copy us and don't otherwise screw around with us." In the end, there will be less suits and more innovation as other manufacturers will start sandboxing their development instead of handing an iPhone to the design department to copy.

"That (the) world is moving so quickly that iOS is already amongst the older mobile operating systems in active development today." — The Verge

I'm amazed that Moto's lawyers would try to pull this stunt of requiring a license from Apple for using a component that already has a license paid for. Simple logic tells you that of course Qualcomm's license covers the purchaser of the part otherwise who would want to buy the part from Qualcomm? Am I missing something there?

This suit will benefit any manufacturer that uses the Qualcomm chip in question. I'm surprised that MicroSoft or Nokia didn't join the suit along with many of the Android phone manufacturers.

Why should they, Motorola isn't revoking Qualcomm's license when they buy the chip of them, Apple has been singled out for this treatment, which is a breach of Qualcomm's contract with Motorola as this suit alleges.

What's that sound I heard in the world according to Gatorguy?

It sounded like a steel jawed trap slamming shut.

Better than my Bose, better than my Skullcandy's, listening to Mozart through my LeBron James limited edition PowerBeats by Dre is almost as good as my Sennheisers.

Someone linked to a court document that seemed to indicate that Motorola had cancelled a licensing agreement with a component maker (not sure if it was Qualcomm or not) about a month after the iPhone was released-- and subsequently sued Apple for using that very same component. You get the feeling that Moto has been plotting its IP battles since long before Apple sued anyone.

They spoke of the sayings and doings of their commander, the grand duke, and told stories of his kindness and irascibility.

Someone linked to a court document that seemed to indicate that Motorola had cancelled a licensing agreement with a component maker (not sure if it was Qualcomm or not) about a month after the iPhone was released-- and subsequently sued Apple for using that very same component. You get the feeling that Moto has been plotting its IP battles since long before Apple sued anyone.

it was not qualcomm it was infineon the orginal chip used in the original iphone.

Someone linked to a court document that seemed to indicate that Motorola had cancelled a licensing agreement with a component maker (not sure if it was Qualcomm or not) about a month after the iPhone was released-- and subsequently sued Apple for using that very same component. You get the feeling that Moto has been plotting its IP battles since long before Apple sued anyone.

That was an Infineon chip. I'll try to find the source but somewhere in the past 24 hours I found a post/claim that Motorola decided to separate themselves from licensing any Infineon chips directly after choosing Infineon to produce a 3G chip to Moto spec, under a Moto patent, and under a Moto contract. That agreement was in Sept/07 according to a press release I found on it.

If the claim is true (and I remember it correctly) that would imply that Apple wasn't the specific target, but perhaps better royalty income from the chip users was the intent.

I'm amazed that Moto's lawyers would try to pull this stunt of requiring a license from Apple for using a component that already has a license paid for. Simple logic tells you that of course Qualcomm's license covers the purchaser of the part otherwise who would want to buy the part from Qualcomm? Am I missing something there?

My understand is that QCOM licenses IPRs from the UMTS consortium to manufacture the chips that are used in 3G. These licenses are for the chip only. When the chip is used in a product like the iPhone, a license has to be paid to the consortium. In previous iPhones, Apple used the Infineon chip sets. They had to pay royalties close to $40 to the consortium that included Nokia, Ericson, etc. I can not see how just using the QCOM chip would insulate Apple from having to pay all those royalties. If that was the case, they would have gone with the QCOM chips in the first place.

The problem here is that Motorola is using the patent system is discriminatory unreasonable manner. Google want to use the patents to extort non FRAN licenses.

Goog/Moto will end up getting spanked by the DOJ and EU. It will be along road in courts. There is too much money here, with Apple having $100B in the bank and every swinging company and lawyer wanting a piece.

I hope the courts see this as abusive and drop the hammer hard on Motorola. Total Bullsh!t. If they win the case, what's next? Perhaps I'll get a bill from Intel to pay a license fee because my Mac has an Intel chip inside it??

Someone linked to a court document that seemed to indicate that Motorola had cancelled a licensing agreement with a component maker (not sure if it was Qualcomm or not) about a month after the iPhone was released-- and subsequently sued Apple for using that very same component. You get the feeling that Moto has been plotting its IP battles since long before Apple sued anyone.

Motorola revoked two licenses months after Apple had actually begun manufacturing systems using components that were previously covered by those licenses. Not one single manufacturer on Earth in any industry could survive the consequences of a judgement in Motorola's favour.

The judgement upholds Apple's use of anti-trust language.

Motorola is desperate in asserting claims based on a third party's (Qualcomm's) component licenses. The claims border on the absurd. At this level of licensing there are thousands of property rights involved in any modern electronic device.

Motorola revoked two licenses months after Apple had actually begun manufacturing systems using components that were previously covered by those licenses. Not one single manufacturer on Earth in any industry could survive the consequences of a judgement in Motorola's favour.

The judgement upholds Apple's use of anti-trust language.

Motorola is desperate in asserting claims based on a third party's (Qualcomm's) component licenses. The claims border on the absurd. At this level of licensing there are thousands of property rights involved in any modern electronic device.

Motorola is heading into trouble.

Thanks for posting that link, very informative.

They spoke of the sayings and doings of their commander, the grand duke, and told stories of his kindness and irascibility.

According to my recollection, Apple started the whole mess, trying to block android devices from appearing on the market.
Now the technique has backfired, I can't help but smile.

It's apples and oranges. Apple has never sued over a standards-essential patent (and they have hundreds of them). Apple sues over copying non-standards-essential patents. If you don't know the difference, try to learn about it.

It's apples and oranges. Apple has never sued over a standards-essential patent (and they have hundreds of them). Apple sues over copying non-standards-essential patents. If you don't know the difference, try to learn about it.

And Apple GETS sued for using standards-essential patents without licensing them. The difference is huge.

Wasn't there some article a little while back where Apple had transferred some patents over to a Patent Troll company, and that company then went on to sue a few Android companies?

Yes, but the move was probably one of necessity. First, since Apple transferred the right to sue to the so called patent enforcement company, the company couldn't sue Apple over other patents it held. Further, nowadays one of the biggest problems with patent litigation if being countersued or having to worry about a trade ban though the ITC. Since the patent company makes nothing, it doesn't have to worry about those things.

It is also important to note, Apple did this shortly after Nokia mentioned that it did the same thing, and that the patents it transferred weren't covered by any Nokia/Apple deal.

The move is probably a smart one. Apple can continue to attack Android. This company will seek a license, which will increase the cost of Android and bring money to Apple.

And Apple GETS sued for using standards-essential patents without licensing them. The difference is huge.

Perhaps, but Apple's argument is it doesn't need a license as companies like Qualcomm already obtained a license. I makes little sense that Qualcomm would get licenses that weren't transferable to buyers of its product. Qualcomm doesn't need a license merely to manufacture a product. It needs the license to cover the sale of its product to others.

According to my recollection, Apple started the whole mess, trying to block android devices from appearing on the market.
Now the technique has backfired, I can't help but smile.

Are you aware that Nokia and Motorola sued Apple before Apple filed a single lawsuit regarding Android. Moreover, I don't see how Apple has lost anything other than money for attorneys. It's products are being sold everywhere intended. If Apple's online sales are blocked in Germany, it will likely merely be a matter of Apple sacrificing a pawn.

I also don't see Apple grumbling about Window Phone, which 1) is probably a better OS than Android, and 2) isn't a copy of iOS.

I'm slowly getting sick with all the lawsuits. Microsoft at its power time never exercised this to amount thats even close to this. A true innovator should not worry so vigorously about competition, because if you innovate youre one step ahead and consumers will know that. Unless innovator is running out of ideas. And as a disclaimer, i dont consider myself as a fan of either company, mobile technology yes.. That i am a true fan of. And with at least 10 iDevices, and as developer of apps for iOS, i am certainly not a hater. Certainly, bit too personal but before people start discrediting me for my thoughts, some background.
So, keep innovating, stop litigating.

A true innovator should not worry so vigorously about competition, because if you innovate youre one step ahead and consumers will know that. Unless innovator is running out of ideas.

Uh huh.

Quote:

And with at least 10 iDevices, and as developer of apps for iOS, i am certainly not a hater.

Why is it that the only people who ever try to justify their positions by posting how many Macs they have are always the ones who are either the most uninformed or the most trollish?

Quote:

So, keep innovating, stop litigating.

As a developer, you should know how foolish this is to say. What's the point in innovating if everyone else is just allowed to steal your idea? If you really do develop iOS apps, tell me which ones you've done so that I can make near-exact copies and sell them for even less. See how you like that.

Are you aware that Nokia and Motorola sued Apple before Apple filed a single lawsuit regarding Android.

I thought Apple's suit against HTC (Android) pre-dated Moto's filing against Apple by several months? Apple filed a patent infringement suit against High Tech Computer Corp, HTC, in March 2010 at the U.S. District Court in Delaware. I think the first Moto suits were filed against Apple in October 2010.

Why is it then that the apple took litigation to new heights, why doesn't facebook care about copycats...?
As a consumer I am interested in innovation, not in profits of the shareholders of company i buy products from. These two is not necessarily interconnected.

Quote:

Originally Posted by Tallest Skil

Why is it that the only people who ever try to justify their positions by posting how many Macs they have are always the ones who are either the most uninformed or the most trollish?

Why justifying? Because otherwise 10 people will immediately say that i'm another android guy...
I wouldn't agree either on 'uninformed' or 'trollish'.

Quote:

Originally Posted by Tallest Skil

As a developer, you should know how foolish this is to say. What's the point in innovating if everyone else is just allowed to steal your idea? If you really do develop iOS apps, tell me which ones you've done so that I can make near-exact copies and sell them for even less. See how you like that.

In a market with 700.000 apps it's almost impossible to make something truly new. Bluntly stealing is of course not an answer. What we are seeing is constant evolution of products and very rarely new invention. I found a niche, focused myself on specific countries and areas and made the best app there in category. If you wish you can get the names of my apps on pm. I Don't think that the forum is interested in that because i'm not from US, and i think that would still be advertising. I do not fear competition, copycats.. it'll just push me further forward to make a difference. To be better today than I am yesterday is a bigger driver for me than the money i get with it. No reason why this shouldn't work on big company scale.